INFRINGEMENT OF TRADE

MARK

INTRODUCTION
WHAT IS TRADE MARK
PROS AND CONES OF TRADEMARK
WHAT IS TRADE MARK INFRINGEMENT
CASE STUDIES

Submitted by : poonam singh

Roll no : 70
WHAT IS TRADE MARK
 A trademark can be any word, phrase, symbol, design, or a
combination of these things that identifies your goods or services.
It’s how customers recognize you in the marketplace and distinguish
you from your competitors.
 The word “trademark” can refer to both trademarks and service
marks. A trademark is used for goods, while a service mark is used
for services.
TYPES OF TRADEMARK

word name slogan symbol picture

PROS AND CONS OF TRADEMARK
REGISTRATION
 Pros:
 Exclusive usage rights

 Build goodwill

 Ensure product quality

 Helps in the creation of asset

 Cons:
 No alteration of trademark

 Trademark opposition

 Renewable every ten year

 Descriptive trademark can not be registered

WHAT IS INFRINGEMENT OF TRADE
MARK?
 A trademark is said to be infringed , when a registered trademark is
used by a person , who is neither the registered proprietor nor the
licensee of the said trademark, in relation to the goods and services
for which it is registered.

 The violation of exclusive right granted to the registered proprietor

of trademark in India is governed by the trademark act,1999.
CASE STUDY : 1CADILA HEALTHCARE
LTD. V. CADILA PHARMACEUTICALS

 The appellant (Cadila Healthcare) and the defendant (Cadila

Pharmaceuticals) were two pharmaceutical companies that introduced
medicine for the treatment of cerebral malaria. The appellant launched the
medicine in style and name of ‘Falcitab’ and the respondent launched it in
the name ‘Falcigo’. Cadila Healthcare filed the lawsuit after discovering
that Cadila Pharmaceutical is using the mark “FALCITAB” which is
similar to their mark “FALCIGO”; and that Cadila Pharmaceutical
registered the mark for a similar medicine. In this lawsuit, Cadila
Healthcare sought an injunction prohibiting Cadila Pharmaceutical from
using amark that is deceptively similar and likely to cause confusion
amongst the consumers.
DECISION OF THE COURT

 The Hon. Supreme Court held that even though the drug is to be prescribed
by the medical practitioners and sold directly to hospitals, the possibility of
the confusion between the two cannot be disregarded.
 The Supreme Court also held that there are certain principles that need to be
followed in the case of deciding the mark as a deceptively similar. They are
as follows:
 To check the nature of the marks which includes word marks composite
marks etc.
 To check ideological and phonetic similarity
 To check the similarity of nature, performance, and character of applicants
 To identify the class of consumers etc.
CASE STUDY:2 TOYOTA VS PRIUS
AUTO INDUSTRY LTD.
 The plaintiff, Toyota alleged that the defendants, Prius Car Industries, a
supplier of auto parts and accessories, infringed upon its registered ‘Toyota,’
‘Toyota Innova,’ ‘Toyota Device,’ and ‘Prius’ Trade Marks. The plaintiff
petitioned the Trade Mark Registry for cancellation of the defendants’
registered mark, and filed suit on the grounds that the defendant was using
their “well-known mark” without their permission, resulting in an unfair
benefit to the plaintiff’s reputation and goodwill. On the other hand, The
Plaintiff did not register the “Prius” trademark in India, and its Prius
automobile was not introduced in India until 2009, much after the
Defendant registered the “PRIUS” trademark in India in 2002.
DECISION OF THE COURT
 The Supreme Court determined that “likelihood of confusion” and
the differentiating powers of a man of average intelligence would be
a more appropriate standard for proving a passing-off activity,
which can only be proven by evidence, which the Appellants failed
to offer. Toyota Jidosha Kabushiki-trademark petition was dismissed
after the Supreme Court ruled that trademark rights are territorial
and not universal and that actual proof is required to establish a
company’s reputation and goodwill in a territory.
CASE STUDY:3 NR DONGREE AND
OTHERS VS WHIRPOOL
 The plaintiff respondent, Whirlpool Corporation, USA is the successor of the
trademark WHIRLPOOL since 1937. This mark is registered in more than 65
countries and was registered in India in classes 7, 9 and 11 but was not renewed
in 1977 and thereafter due to import restrictions of the Indian government. The
defendant appellants, NR Dongre and others, operating through Usha
International Limited and Usha-Shriram India were manufacturing washing
machines -class 11 under trademarks USHA, USHA-SHRIRAM and USHA-
LEXUS. Their application for registration of trademark WHIRLPOOL was
granted following dismissal of Whirlpool Corp.’s opposition. Whirlpool Corp.
filed a suit alleging passing off of its trademark WHIRLPOOL in the Delhi
High Court. The learned single Judge recognising trans-border reputation of the
mark granted temporary injunction restraining NR Dongre and others from the
use of the trademark WHIRLPOOL on their goods. Dismissing a further appeal
by NR Dongre, the order was upheld by the Division Bench.
The defendant appellant, NR Dongre, by special leave filed appeal in the
Supreme Court and submitted that the plaintiff respondent was guilty of culpable
delay, acquiescence, laches and asserted their right as registered proprietors of
the mark in India. The plaintiff respondent laid store by the trans-border
reputation and goodwill of their mark, special circumstances for non-renewal of
their registration for the WHIRLPOOL trademark in India and the extensive
advertising of the mark in the absence of goods
CASE STUDY:4 STARBUCKS
CORPORATION V. SARDARBUKSH
 Starbucks registered their word mark ‘STARBUCKS’ and corresponding
logo as a trademark in India in 2001. The Defendants established their
business in 2015 under the name ‘Sardarbuksh Coffee & Co.’ Sardarbuksh’s
logo was a turban commander’s face with wavy lines on the sides
surrounded by a circular black band. Through a letter of demand, the
Plaintiff requested that the Defendants change the logo in 2017. In response,
the Defendant simply changed the colour scheme to black and yellow and
resumed operations. The Defendant began operations under the same name
in May 2018. The Defendant and Plaintiff provide comparable goods and
services. The plaintiff filed a suit against Sardarbuksh in the Hon’ble High
Court of Delhi as a result of the preceding events. The plaintiffs sued the
defendants for trademark infringement by using a deceptively similar mark
DECISION OF COURT
 The Delhi High Court relied on the National Sewing Thread Co.
decision. Ltd vs James Chadwick & Bros Ltd, which stated that in
order to determine whether a trademark was deceptively similar, the
court had to put itself in the shoes of the customers.
 The Delhi High Court concluded, using the aforementioned case
that a man of ordinary intelligence might be confused, and thus it is
deceptively similar.
CASE STUDY:5 YAHOO VS AKASH
ARORA
 Yahoo INC., the plaintiff, was the owner of the trademark “Yahoo” and the
domain name “yahoo.com,” both of which were widely recognized brands
in the minds of consumers around the world providing internet services. In
addition Yahoo was a registered company since 1995, having registered
trademarks in various countries except India.
 Akash Arora, the defendant in the particular case simultaneously started
using the domain name ‘yahooindia.com’ for the similar kind of services
India. Yahoo Inc. sought an interim injunction to prevent from using the
domain name ‘yahooindia.com’ or any name similar to its own.
DECISION OF COURT
 The court determined that Akash Arora was liable for infringing the
“Yahoo” trademark and restricted him on the basis that he was using
a deceptively similar domain name and delivering services similar to
those of Yahoo Inc., which constituted cybersquatting. This ruling
was based on the premise that a company’s goodwill resides
primarily in its name and trademark, and especially so in the
instance of Yahoo Inc. Yahoo Inc. was awarded the passing-off
remedy.